Fox in the Box: CoA Rules on GLEE

The Court of Appeal yesterday heard the appeals and cross-appeals brought by Comic Enterprises (‘Comic’) and 20 ^th Century Fox (‘Fox’), ultimately upholding a verdict in Comic’s favour. To recap, Comic are the operators of live comedy and entertainment venues and the owners of two UK trade marks for THE GLEE CLUB [logos] whilst Fox produce a TV show called GLEE. In 2014 the High Court found that Fox infringed Comic’s registered trade marks, but rejected a claim of passing off. Here, Comic appealed the finding of no passing off, and Fox the finding of infringement. A key issue centred on whether ‘wrong way round confusion’ constituted trade mark infringement i.e. whether confusion stemming from consumers being more familiar with the infringer (Fox) and assuming a link with the infringed (Comic) gave rise to a valid legal action. The Court dismissed Fox’s arguments of ‘no infringement’ and held that both traditional and wrong way round confusion could equate to infringement because in each instance the consumer could mistakenly believe that the goods or services originate from one owner or associated owners. As such, Fox infringed Comic’s trade marks. However, Comic’s appeal on passing off was rejected. This second point is interesting for practitioners, highlighting again the differences in nature between infringement of a registered trade mark and passing off - in particular, the power of a registered right over an unregistered one (as in this case) to give rise to infringement of a registered mark via consumer confusion, but which would not amount to a misrepresentation or cause damage under passing off. This case may indicate an inherent tension between an action for ‘wrong way round confusion’ versus a claim for passing off, especially where the infringed has a very defined commercial reputation at the date of first use by the infringer, and the infringer’s own use is both sizeable and in a different commercial sector. The willingness of the Court to entertain wrong way round confusion is a welcomed approach which shows an appreciation of a trade mark’s function as an indicator of trade origin. This decision is good news for smaller brand owners with earlier rights who may find themselves in a David vs Goliath scenario against a well-known brand. That said, the decision does not reduce the need for parties to always consider the merits of their case in the round, including any evidence filed in support. Whilst this a promising judgment for Comic, the real test is yet to come, with Fox’s applications to invalidate both of Comic’s marks to be heard in the near future. Stay tuned… Stobbs has a wealth of experience in advising both clients large and small on trade mark and passing off matters. If you are interested in the issues raised in this article and how they could affect your business, feel free drop us a line.

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